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Trade Marks

What is a trade mark?A trade mark (spelt ‘trademark’ in US English) is a sign that distinguishes the goods or services of one trader from those of another. A sign includes, for example, words, logos, pictures or a combination of these. It can also be a shape, packaging, a musical sound, colours, and even more - as long as it can serve the purpose of a trade mark and be graphically represented. How is a ‘brand’ different from a trade mark? It’s really the same thing except we could say that a brand is a ‘trade mark with a promise’, that is, it conveys a certain message and consumer expectation. A trade mark is therefore a marketing tool and can be extremely valuable.

Why should a business bother with investing in trade marks? What is the sound business case?If a business has invested in a product or service, with financial outlays for research and development, design and product improvement, marketing and sales, and more, then the identity of the final product, with all this investment, should be protected so that the public always associates the sign or signs that identify your product with your company. The brand you develop ensures repeat purchases, customer loyalty and customer advocacy.

Registered trade marks are also considered personal property - like a car or house - that gives your business a certain value. This value could be a sizeable percentage of the business's total market value, especially if your products or services under the brand are successful.

A registered trade mark is also the most effective way of protecting your brand identity from those seeking to ride on your hard-fought successes and reputation. It stops others from copying or counterfeiting your products, and even using confusingly similar trade marks for the same or similar products.

Rights attached to a trade markIf you have a registered mark, you have the right to use that mark on the goods and services in the classes for which it is registered. All goods or services are divided into one or more of 45 possible classes. You also have the legal right to take action against anyone who uses your mark or a similar mark on the same or similar goods and services to those that are published in the official Register. If your mark were unregistered, on the other hand, an alternative action you could take, if you believe you have earlier rights through use, is to consider a common law ‘passing off’ action. To be successful in a passing off action, you must prove first that the mark is yours from an earlier date, that you have built up ‘goodwill’ or reputation in the mark, and that you have been harmed in some way by the other person’s use of the mark which misrepresents or passes off their mark for yours. This can be very difficult to prove, and as a result, a passing off action can be very expensive. This is not the case with a registered mark.

If you are serious about your business and the name(s) under which you trade, then an unregistered trade mark should be converted to a registered one as soon as possible. It is not improbable that a later user of the same or similar mark could even stop you from using your own mark that you have legitimately been using if he/she has got it registered first!

Procedures and ProtectionThe Trade Marks Registry of the Intellectual Property Office (formerly the 'UK IPO' and before that 'the Patent Office') , a Government agency, is the body that grants registration after a procedure that starts with a formal application which is examined to see if it complies with certain legal criteria, then proceeding to advertisement in the official Trade Marks Journal to allow third parties who feel they have prior rights to object, ending with - if successful - a grant of the intellectual property right that is published in the Journal. Once granted the effective protection date is the date of application. Protection can last indefinitely in theory as long as the mark is renewed each 10 years (currently) with payment of the appropriate government fee. Once registered, use of the ® symbol is recommended as it alerts others of your rights. Prior to this, using ™ alongside your mark is quite acceptable, even though there are no legal rights involved, as it also alerts others to the fact that you consider this as your mark.

Protection is limited to the UK. Elsewhere there are other ways of protecting your mark in a cost-effective manner, principally through the Community Trade Mark for EU countries, and the Madrid Protocol system for many other countries.

For more information on trade marks, go to one of the following articles in the Briefings section